ABG’s Legal and Litigation Department offers its clients legal advice and guidance in the field of employee inventions.
Pursuant to Spanish Patent Law, the right in an invention is initially owned by the inventor or inventors, with an exception comprising inventions arisen in the framework of a working relationship between the employer and the inventor/employee.
Under certain circumstances, inventors whose work has led to a patentable invention are entitled to a monetary compensation from the employer, a right that may not be waived ex ante on a general basis by the inventor/employee in the employment agreement. Moral rights of the employee are also unwaiverable under Spanish employee inventions legislation.
That said, there are key aspects on how the invention disclosure has to be notified from the inventor/employee to the employer, its contents, timing and effects of non-compliance by the employee of the invention disclosure protocol, which are not contemplated by the law and are essential for the employer not to jeopardize its right to protect the notified invention through the patents system.
In the field of employee inventions, in ABG we advise our clients:
- To obtain robust evidence on entitlement by employers on inventions developed by its employees.
- To set up clear internal procedures within companied describing how invention disclosures have to be deployed and the consequences of non-compliance by employees of such notification procedure.
- To assess how a monetary compensation should be calculated in those cases where the inventor/employee is entitled to such source of supplementary remuneration.
- to claim entitlement before the Courts of Justice on patent applications and patents filed by inventors after the termination of their working relationship with formal employers whose subject matter are inventions made or arisen when their employment relationship with the former employer was still in force.